WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Compañía Logística de Hidrocarburos CLH S.A. v. Privacy Administrator, Anonymize, Inc. / Sam Dennis, Investments.org Inc
Case No. D2018-0793
1. The Parties
The Complainant is Compañía Logística de Hidrocarburos CLH S.A. of Madrid, Spain, represented by PONS IP, Spain.
The Respondent is Privacy Administrator, Anonymize, Inc. of Bellevue, Washington, United States of America (“United States”) / Sam Dennis, Investments.org Inc of Toronto, Canada, represented by Muscovitch Law P.C., Canada.
2. The Domain Name and Registrar
The disputed domain name <clh.com> is registered with Epik, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 13, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 13, 2018. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on April 17, 2018 and an amendment to the Complaint on April 18, 2018.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. Upon request by the Respondent, the Center granted an extension of Response due date until May 12, 2018. The Response was filed with the Center on May 12, 2018.
The Center appointed Dr. Clive N.A. Trotman, Reyes Campello Estebaranz and The Hon Neil Brown Q.C. as panelists in this matter on May 31, 2018. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a Spanish-based company engaged in oil transportation, storage, and other activities, with subsidiaries in Ireland, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), and Oman, and presence in various jurisdictions other than Canada (Colombia, Cuba, Mexico, Panama, Morocco, etc.). It was incorporated in 1927 under a different name and adopted its present name in 1993. The scale of the Complainant is that its operating income in 2016 was over EUR 700 million, it operates more than 4000 km of oil pipelines and two tanker ships, and had nearly 1400 staff at the end of 2012. In 2016, Borealis Infrastructures Inc. (Canadian) and Ardian (French fund, which has become its main shareholder) acquired some of its shares.
The Complainant is the registrant of at least 34 trademarks for CLH alone or in combination, as word marks or with designs, of which the following are sufficiently representative for the present proceeding:
CLH, figurative, European Trademark, European Union Intellectual Property Office (EUIPO), registered April 27, 2000, registration number 988964, classes 4, 35, 39;
CLH, figurative, International Trademark, registered August 26, 1994, registration number 622848, classes 4, 39, which is based on a Spanish Trademark and covers Austria, Benelux, Switzerland, China, Germany, Algeria, France, Italy, Morocco, Monaco, Portugal and Singapore.
The Complainant also owns 86 domain names comprising or incorporating its trademark.
The Respondent is a Canadian company incorporated in 2008 that adopted its present name in 2009. The Respondent, among other business, trades in domain names, particularly generic, descriptive, and three-letter domain names.
The disputed domain name was first registered on October 17, 1995, and was acquired by the Respondent on July 27, 2017 for USD 32,000. Currently it resolves to a page on the website of Uniregistry Market at “www.uniregistry.com”, through which it is offered for sale.
5. Parties’ Contentions
Key contentions of the extensive Complaint may be summarised as follows:
The Complainant says the disputed domain name is identical to the trademark CLH in which the Complainant has rights.
The Complainant says it is well-known and has attached a summary of its financial scale, a list of prestigious national and international awards received, and references to the support it has donated to community interests.
The Complainant contends that the Respondent does not have rights or legitimate interests in the disputed domain name and has not been licensed to use the Complainant’s trademark. For some years from 1995 until recently the disputed domain name was owned by CLH International Inc. (not the Complainant), as “first come, first served”. Referring to Privacy Administrator, Anonymize, Inc., (“Anonymize”), the Complainant says the present ownership of the disputed domain name is anonymous and that it resolves to a website showing it to be for sale. Anonymize does not have a trademark for CLH or the Complainant’s permission to use CLH in the market. The Complainant asserts its perceived rights in its trademark under the Paris Convention for the Protection of Industrial Property (1883), and under European law and Spanish law.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith.
The Complainant says its rights in the trademark CLH date back to 1981, predating the Respondent’s registration of the disputed domain name. The Complainant says it has more than 50 registrations of its trademark, more than 80 domain names containing the trademark, and its trademark is very well-known internationally, therefore the Respondent should have been aware of the trademark before registration of the disputed domain name.
The Complainant says it offered to buy the disputed domain name through a representative on April 7, 2015, from its then owner, CLH International Inc., who replied having no interest in selling. In March, 2017, the Complainant saw the disputed domain name for sale through the broker “www.mavendomains.com”. In email exchanges the Complainant made offers ranging from USD 848 to USD 2000 and the seller’s price through the broker ranged from USD 148,000 down to USD 48,000.
At about this time the disputed domain name was sold through the broker to another party and later was offered for sale on “www.sedo.com”. The Complainant made offers in April 2017 of USD 2000 and, in response to an indication of a minimum selling price of USD 10,000, offered USD 10,000 and eventually USD 12,500, to which there was no reply.
On a date in 2018 the disputed domain name was offered for sale on “www.uniregistry.com”. The Complainant asked the price and was told USD 225,000. The Complainant then decided to bring this Complaint. The Complainant contends that owing to the foregoing, it “deems that the domain name <clh.com> was registered and is being used in bad faith”.
The Complainant has cited a number of previous decisions under the Policy that it considers to be supportive of its position.
The Complainant requests the transfer of the disputed domain name.
Key contentions of the extensive Response may be summarised as follows:
The Respondent denies the Complaint.
Samuel Denis, as the sole shareholder, officer and director of Investments.org Inc, has submitted a solemn declaration signed on May 11, 2018, before a Notary Public and Commissioner in accordance with the provisions of the Canada Evidence Act (1985), stating key elements of the Response.
The Respondent concedes that the disputed domain name is identical to the Complainant’s trademark.
The Respondent contends it is an investor that buys and sells generic, descriptive, and particularly three-letter acronym domain names, and that this is a widely established and legitimate activity. Its stock in 2016 was around 22,000 domain names. According to substantial precedent, interest in a generic three-letter domain name that is a common acronym gives rise to a right or legitimate interest. Since trade in generic and descriptive domain names is a legitimate and well-established business, that may in itself constitute a legitimate interest in a domain name.
The Respondent refutes the Complainant’s claim to exclusivity over its trademark and the Complainant’s assertion that “nobody can use CLH in business or as a domain name, other than it”. The Respondent lists seven CLH trademarks (including CLH3 and CLH SUITES) in different countries. It says, with annexed lists, that CLH is part of the name of numerous companies and businesses including, for example, 14 in New York State, 27 in California, 140 in the United Kingdom, and others in Canada, Australia and elsewhere. The initials CLH are or have been used for other purposes such as the former name of the Hawai’i Association for Justice, and for the (translated) Harmonized Classification and Labelling system of the European Chemicals Agency. The Respondent further alleges, with supporting evidence, that particularly in Canada (where the Respondent is located), the only trademark for CLH is owned by the Carol Wiring Harness Co. Ltd. of Taiwan province of China, in connection with electrical apparatus, and the Complainant has no trademark rights.
The Respondent says it had not previously heard of the Complainant or its trademark. The Complainant has produced no evidence that its trademark is famous outside of Spain, or specifically in Canada.
The Respondent says it can set any price for a domain name it has for sale, including when it is responding with a counter-offer, and that its prices are in line with the market.
The Respondent says it has not tried to hide itself or hinder proceedings, but replied with the relevant name of Sam when contacted by the Complainant through “www.uniregistry.com”.
The Respondent says that in summary, the Complainant tried to buy the disputed domain name several times over the years, offered too little, and is now trying to get it through this proceeding.
The Respondent asks for a finding of Reverse Domain Name Hijacking (RDNH) on grounds including that the Policy should not be used unless Complainant has a reasonable expectation of success. The Respondent alleges that the Complainant misled the Panel by claiming exclusivity of its generic trademark, by making unsupported arguments under paragraphs 4(a)(ii) and (iii) of the Policy, and by using the Policy to try to obtain the disputed domain name after failing to do so in the market.
The Respondent has cited a number of previous decisions under the Policy that it considers to be supportive of its position.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable dispute-resolution provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith”.
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 15 (a) of the Rules provides that “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. The Panel has taken into consideration all of the evidence, annexed material and submissions provided by the parties.
A. Identical or Confusingly Similar
The Respondent has conceded that the disputed domain name <clh.com> is effectively identical to the Complainant’s trademark CLH, and the Panel so finds under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has not been licensed to use the Complainant’s trademark and has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to contest the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy and to establish rights or legitimate interests in a disputed domain name by demonstrating, without limitation:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.
The Respondent’s position is that in the terms of paragraph 4(c)(i) of the Policy, its use of the disputed domain name is in connection with the bona fide business of trading in domain names, and that it was legitimately purchased on market when the Complainant had declined to negotiate further over the price being asked by the seller at that time.
Whilst previous decisions under the Policy do not have the status of precedent, similar cases are generally decided similarly and it is commonly accepted that, absent factors to the contrary in a particular dispute, trading in domain names is a legitimate activity that has grown into a substantial market over the years. The Respondent said it had a stock of about 22,000 domain names in 2016 with specialisation in three-letter domain names.
The acquisition and offering for sale of a particular domain name would cease to be bona fide in the event a complainant could show that it had been targeted specifically by a respondent, which would be a matter of bad faith. The Panel will therefore proceed to determine whether the disputed domain name may have been registered and used in bad faith.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location”.
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found in other circumstances by the Panel.
The Complaint impinges on particularly paragraph 4(b)(i) of the Policy, which would require the Complainant to prove that the disputed domain name was acquired primarily for the purpose of selling or renting, in this instance to the Complainant, or in other words, that the Complainant was specifically targeted by the Respondent. The Complainant submits in effect that the disputed domain name matches the Complainant’s trademark, over which the Complainant asserts considerable exclusivity.
The Respondent in its evidence and submissions has demonstrated convincingly that the acronym CLH is far from being associated exclusively with the Complainant in Canada where the Respondent resides. Copies of five registration documents for the trademark CLH standing alone, and two in combination, have been produced in evidence, their holders being located in Malaysia, Australia, Japan, France (CLH3), Viet Nam, Taiwan province of China and the United States (CLH SUITES). Particularly in Canada, a Taiwan company in the electrical apparatus market sector owns the only trademark for CLH (standing alone), and the Complainant has no trademark rights. Six Respondent annexes are devoted to screen copies of the results of searches for business names (not all of which are necessarily current) containing and mostly starting with CHL, at the New York Department of State, the California Secretary of State, the Delaware Division of Corporations, Companies House (United Kingdom), the Australian Business Register, and the Québec Business Register, each annex listing a number of entries. Many of the business names comprise little more than “CLH”, for instance CLH Inc (New York), CLH LLC (California), C.L.H. Inc (Delaware), CLH Limited (United Kingdom), CLH Corp (Australia), and CLH Law (Québec).
It is not necessary to be exhaustive in detailing other companies and quasi-public bodies or authorities incorporating CLH unearthed by the Respondent.
On the evidence, clearly the acronym CLH, whether as a registered trademark or potentially having common law trademark status by association with the names of companies or other entities, and whether alone or in combination, is in wide use as the identifier of numerous business and other entities. Each of those users of the acronym CLH is a potential customer for a domain name comprising or incorporating CLH, some of which the Respondent has shown to be already in use, including for example <clh.hu>, <clh.com.au> and <clh.org>.
The Complainant’s task is to prove that the Respondent acquired and has used the disputed domain name with intent to target specifically the Complainant, out of all the potential purchasers world wide. There is no evidence of this. Furthermore, the Respondent’s large-scale business in domain names, especially three-letter domain names, is consistent with a relatively dispassionate attitude to the potential clientele for individual names. The Complainant implies that the Respondent must have been aware of the Complainant’s trademark, which the Respondent denies, but the onus of proof is on the Complainant and the principle of constructive knowledge is invoked only sparingly under the Policy and where there are good grounds.
The Complainant has not sufficiently produced evidence of the notoriety of its trademark internationally and particularly in Canada. The Panel conducted several searches over the Internet browsers, finding some (low) presence of the Complainant and its trademark CLH internationally, and in various Canadian Newspapers referring to the acquisition of its shares by various Canadian companies (Endbridge and Borealis Infrastructure Inc.). However, these facts alone, with no other relevant evidence provided by the Complainant, are not considered sufficient to conclude that the Respondent was aware of the Complainant’s trademark rights and that it acquired and used the disputed domain name with the intent to target specifically the Complainant.
On the other hand, the Panel finds that the high difference in price requested by the Respondent in a first offer (it purchased the disputed domain name for USD 32,000 and offered it to the Complainant for USD 225,000), cannot alone be considered as an evidence of bad faith. It could be a normal practice in negotiations to start with very high/low prices until an understanding is reached.
In any case, the ownership of a trademark comprising a generic word or alphanumeric string does not grant a monopoly over its use on the Internet by others with innocent intent, even with knowledge that it is another’s trademark. “It is not a per se breach of the UDRP to register the trademark of another as a domain name where the trademark is a generic word” (Macmillan Publishers Limited, Macmillan Magazines Limited and HM Publishers Holdings Limited v. Telepathy, Inc, WIPO Case No. D2002-0658); “Indeed, genericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration” (Rollerblade, Inc. v. CBNO and Ray Redican Jr., WIPO Case No. D2000-0427).
Thus the Panel has not found sufficient evidence that the Respondent targeted the Complainant or a competitor of the Complainant within the meaning of paragraph 4(b)(i) of the Policy. No evidence has been produced of the Respondent having engaged in a pattern of blocking registrations; or that the Respondent’s primary purpose was to disrupt the business of the Complainant; or that there has been any intention to cause confusion between the disputed domain name and the Complainant’s trademark (paragraphs 4(b)(ii), (iii) and (iv) respectively of the Policy). The Panel finds for the Respondent under paragraph 4(a)(iii) of the Policy.
Reverting to the question of rights or legitimate interest in the disputed domain name, the Panel finds no sufficient proof on the evidence that the Respondent is without such rights or legitimate interests within the terms of paragraph 4(c)(i) of the Policy and accordingly finds for the Respondent under paragraph 4(a)(ii) of the Policy.
D. Reverse Domain Name Hijacking
Paragraph 1 of the Rules states:
“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
Paragraph 15(e) of the Rules states in part:
“If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.”
The Complainant’s conduct throughout its quest for the disputed domain name is not uncommon. The chronology is essentially uncontested between the Parties. The Complainant evidently and understandably wanted to add the “.com” extension of its trademark to its stable of 86 domain names (some of which admittedly might not have been originally of the Complainant’s creation). The Complainant’s offers for the disputed domain name over about three years need not be rehearsed but did not apparently come close to securing a purchase. It is not the role of the Panel to comment on prices prevailing in the marketplace. The Complainant then resorted to a proceeding under the Policy.
Evidence of the ubiquity of the acronym CLH, alone or in combination, in business names and trademarks world wide, was as easily accessible to the Complainant as it has been to the Respondent. To the lists produced in evidence must be added CLH International Inc., from which the Complainant had tried to buy the disputed domain name in the first place.
Nevertheless, a finding for the Respondent does not equate with RDNH. Alternative views as to the legitimacy of speculation in domain name have been debated since the early days of the Policy: see for example the diametric positions taken by the majority and the minority of the three member panel in J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054 (crew.com).
The majority of the Panel would not go so far as to say the Complaint was brought abusively.
For the foregoing reasons, the Complaint is denied.
Dr. Clive N.A. Trotman
Reyes Campello Estebaranz
Date: June 14, 2018
CONCURRING BUT SEPARATE OPINION ON RIGHTS AND LEGITIMATE INTEREST AND DISSENTING OPINION ON REVERSE DOMAIN NAME HIJACKING
The Honourable Neil Anthony Brown QC
Rights and Legitimate Interests
It is literally correct, as the majority opinion states, that there is “no sufficient proof on the evidence that the Respondent is without such right or legitimate interest within the terms of paragraph 4(c)(i) of the Policy …”, although it is probably more accurate to say there was no evidence at all to that effect. That statement, however, does not do justice to the Respondent’s case on rights and legitimate interests or the important principle that arises therefrom.
The Respondent’s case was that it is now widely accepted that the registration of a domain name that is a two, three or four letter acronym of a generic nature gives rise to a legitimate interest in the domain name. That proposition is consistent with many previous decisions, some of which were cited by the Respondent, such as CRS Technology Corporation v. CondelNet, NAF, Case No: FA#002000093547, Spherion Corporation v. Neal Solomon, NAF Claim Number: FA#0204000112454, and HP Hood LLC v. hood.com, NAF Claim Number: FA0408000313566, although there are many other decisions to the same effect.
In support of its case, the Respondent tendered a great deal of evidence to show that the letters making up the domain name and appearing in the same order as they do in the domain name, are in very wide use and are therefore, in that sense, generic. The Complainant therefore has no monopoly right to the expression that might prevent the Respondent from having its own right to register the domain name.
Obviously, if the Respondent registered the domain name to copy or trade off the Complainant’s trademark or its name and reputation, or if it acted in any other inappropriate manner it would not be allowed to bring itself within the principle just stated. But there was no evidence adduced by the Complainant to show that was the case and nothing from which such as inference could be drawn or even suspected. Indeed, the Complainant’s entire case on rights and legitimate interests was that it has a trademark for CLH, the Respondent does not, and it had not obtained the Complainant’s permission to use the expression, which misconceives the issue under inquiry.
It should therefore be clearly understood that the Respondent has a right and legitimate interest in the domain name which falls within a well-established principle and there is no evidence whatsoever to take it outside that principle.
Reverse Domain Name Hijacking
Findings of Reverse Domain Name Hijacking should be made only in clear cases, but this is such a case and the finding should be made.
As matter of practicality in resolving this frequently difficult question, this Panelist, like many others, applies the test of whether the Complainant knew or must have known that it could not prove the essential elements of its case. In addition, an attempt can usefully be made to determine whether, all things considered, the Complainant’s motivation was to harass the Respondent or simply to make what it saw as a legitimate defence of its trademark.
In the present case, the Complainant’s case shows that it must have known it could not prove any element in the case other than the nominal requirement that it ‘has’ a trademark. Indeed, this case must be unique in the annals of domain name cases as not only does the Complainant not offer any evidence that the Respondent registered and used the domain name in bad faith but it does not allege it in any understandable way. In fairness to the Complainant, it ‘deems’ it to be so, but deeming it to be so is not evidence and it does not raise any inference or even suspicion that the domain name was registered and used in bad faith. Accordingly, as the Complainant adduced no evidence on that issue, it must have been very clear to the Complainant that it could not prove either prong of the important element of bad faith. Despite that, it alleged bad faith against the Complainant which, in any event, should not be alleged unless there is some reasonable ground for doing so.
Nor, with respect to the equally important element of rights and legitimate interests, was there any evidence offered to show that the Respondent might have done something untoward that would negate its obvious right to register a domain name which, according to the Respondent’s evidence, and as the Complainant could easily have ascertained, a good slice of the international commercial community was also using.
Instead, the Complainant’s case was substantially if not solely that it had a trademark. Even that issue is couched in a manner that does not help the Complainant’s case, either in general or on the specific issue now under consideration, as it seeks to invest that trademark with almost magical powers that it cannot possess. The Complainant’s case was that its trademarks, for it has several of them, “’shall extend to any type of goods, service or activities” and apparently anywhere in the world, including beyond Spain which is clearly where the Complainant has its principle business. For present purposes, that type of allegation is open to the inference that it is being made to harass or intimidate the domain name holder.
In addition, the history of the Complainant’s sustained efforts to buy the domain name shows that it has never believed it had an entitlement to it. It is also clear that after failing to buy the domain name, it turned to Plan B, which was to file the present claim. That approach has rightly been regarded by many panellists as raising a case for a finding of Reverse Domain Name Hijacking, as it shows the Complainant’s allegations were not genuine but were a recent invention.
In the present case, as in all such cases, the Panel has to decide what, in substance, was the intention and motivation of the Complainant in bringing the claim and on all considerations the Complainant must have known that this was a claim that, on the facts known to the Complainant, should never have been brought. The case for finding Reverse Domain name hijacking is therefore made out. Moreover, it is not a borderline case but a clear one.
The Hon Neil Brown Q.C.
June 13, 2018